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IPR Estoppel A Paper Tiger? – Patent

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After a final written decision issues, an IPR petitioner is
statutorily estopped from going back to the district court and
arguing that the same claims are “invalid on any ground that
the petitioner raised or reasonably could have raised during that
inter partes review.” 35 U.S.C. § 315(e)(2).
While the application of IPR estoppel is generally straightforward
when it comes to prior art patents and publications, the law is
murkier when it comes to prior art products.

This question of IPR estoppel and its application to prior art
products was recently addressed in Chemours Company FC, LLC v. Daikin Industries
Ltd. and Daikin America, Inc.
, C.A. No. 17-1612 (MN) (D. Del.
July 8, 2022),
where the District of Delaware denied the
plaintiff’s motion for summary judgment on IPR estoppel where
the defendant asserted physical prior art products as invalidity

Back in 2018, the defendant petitioned for, and the PTAB
instituted, IPR of the two asserted patents, based on three
prior-art patents and patent applications. The district court
stayed the case pending resolution of the IPRs. The PTAB
invalidated all claims of the asserted patents as obvious. A
divided Federal Circuit panel ultimately reversed, finding that the
main prior paper art taught away from at least one claim

After the district court litigation resumed, the defendant
contended that four of its prior-art products anticipated the
asserted claims or rendered them obvious. The plaintiff moved for
summary judgment on IPR estoppel, claiming that the defendant
raised the same arguments that it raised during IPR, and that the
prior-art products were cumulative of the IPR record. In response,
the defendant argued that its physical prior art products disclosed
every claim limitation, including limitations that the plaintiff
itself contended were missing from the paper prior-art.

Although Section 311(b) expressly limits IPRs to patents or
printed publications, some courts have extended IPR estoppel to
prior-art products where “there was a corresponding printed
publication for the physical device” that could have been
raised during the IPR. See, e.g., Wasica Fin. GmbH v.
Schrader Int’l, Inc.
, 432 F. Supp. 3d 448, 453 (D. Del.
2020). But other courts apply a “separate and superior”
disclosure test, requiring the court to determine if the asserted
physical product discloses features that are not included or
described in the printed publication. See Star Envirotech, Inc.
v. Redline Detection
, LLC, No. SACV 12-01861 JGB (DFMx), 2015
WL 4744394, at *4 (C.D. Cal. Jan. 29, 2015).

Notwithstanding these different approaches, the Delaware court
took a different tack, holding that “[a]s a matter of
statutory interpretation, estoppel does not apply to the prior-art
products that [defendant] relies on—regardless of whether
those products are ‘cumulative.’”

Takeaway: This decision indicates that at least
some courts apply a “bright line” rule for IPR
estoppel, even if the prior-art products are alleged to be
cumulative of the paper prior-art at issue in prior IPR

Disclosure: Jones Day represented the
defendants in this case.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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